The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is CVX, Rubalier of Malabo, Equatorial Guinea.
The disputed domain name <legocityadventcalendar.info> (the “Disputed Domain Name”) is registered with Webagentur.at Internet Services GmbH d/b/a domainname.at.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, August 2, August 3, August 4, and August 5, 2010, the Center transmitted by email to Webagentur.at Internet Services GmbH d/b/a domainname.at a request for registrar verification in connection with the Disputed Domain Name. On August 5, 2010, Webagentur.at Internet Services GmbH d/b/a domainname.at transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 27, 2010.
The Center appointed Isabel Davies as the sole panelist in this matter on September 10, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant, LEGO Juris A/S, based in Denmark, submits that it is the owner of the LEGO brand relating to the famous LEGO children’s construction toys and related products. According to the Complainant, its licensees are authorised to exploit the Complainant's intellectual property rights, including its trade mark rights, in the United States and elsewhere. The Complainant launched the LEGO brand in the United States in 1953, in relation to its construction toys. At present, LEGO products are sold in over 130 countries around the world.
According to the documents submitted with the Complaint, the Complainant is the holder of numerous trade marks valid throughout various jurisdictions around the world, including the European Community (the “LEGO Trade Marks”). The LEGO Trade Marks are among the best known in the world, as recognised by Superbrands UK, who in 2009/2010 voted LEGO number 8 of the top 500 Superbrands in the world.
In recent years, the Complainant and other companies from its capital group have extended use of the LEGO Trade Marks to also cover goods such as computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant also has a significant presence on the Internet, through an extensive website that can be accessed via the domain name <lego.com>. Furthermore, the Complainant has registered over 1000 additional domain names encompassing the word “lego”. It has in place a policy stating that all intellectual property containing the word “lego” (including domain names and trade marks) should be owned by the Complainant.
The Respondent, CVX, Rubalier, is an entity with an address in Equatorial Guinea. Due to the nature of the information provided, as well as the lack of Response on the part of the Respondent, it is unclear whether the Respondent is a physical person or corporation.
The Disputed Domain Name was registered on May 6, 2010.
Pursuant to the evidence provided by the Complainant, as at the time the Complaint was filed the Disputed Domain Name resolved to a website showing sponsored listings linking to the websites of entities other than the Complainant; these listings use the word “lego” in relation to third party websites.
The Complainant has provided copies of the cease and desist letter and reminders that it sent to the Respondent. The Complainant’s first attempt to contact the Respondent was made on June 15, 2010, when a cease and desist letter was sent to the Respondent by email. In this letter, the Complainant said that the unauthorised use of the LEGO Trade Marks within the body of the Disputed Domain Name violated the Complainant’s rights. The Complainant requested a voluntary transfer of the Disputed Domain Name, and offered to pay the costs of the transfer and re-registration of this domain name (in an amount not exceeding out-of-pocket expenses). As no response was received, the Complainant sent a reminder letter to the Respondent on June 23, 2010. The Respondent once again did not reply.
The Complainant submits that, as a result, having tried and failed to resolve the matter in an amicable manner, the Complainant filed a complaint with the Center in accordance with the UDRP.
In light of the above, the Complainant contends that:
The dominant part of the Disputed Domain Name comprises the word “lego”. The Complainant has provided a list of trade marks encompassing the word “lego”, which it has registered in various jurisdictions worldwide. The word “lego” also forms the dominant part of many domain names held by the Complainant.
The fame of the LEGO Trade Marks has been confirmed in numerous cases considered by UDRP panels, for example in cases: LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680.
The Complainant submits that in previous panel decisions, it has been established that confusing similarity takes place when well-known trade marks are paired up with different kinds of generic prefixes and suffixes. Therefore, the addition of the suffix “cityadventcalendar” is not relevant and does not impact on the overall impression of what the Complainant submits is the dominant part of the Disputed Domain Name, i.e., the word “lego”.
The Complainant argues that as a result of the above, persons viewing the Disputed Domain Name are likely to believe that it is a domain name owned by or connected with the Complainant. The likelihood of confusion includes an obvious association with the Complainant’s LEGO Trade Marks. It is therefore probable that anyone visiting the Disputed Domain Name will believe that it was registered by or is connected with the Complainant. According to the Complainant, the Respondent thereby exploits the goodwill and reputation connected with the Complainant’s LEGO Trade Marks, which may result in dilution and other damage for these marks.
In summary, according to the Complainant, it is the owner of the LEGO Trade Marks, which are used extensively and have been found to be famous throughout the world. The dominant part of the Disputed Domain Name is composed of the body of the primary LEGO Trade Mark, i.e., the word “lego”, and is therefore confusingly similar to this mark. Meanwhile, neither the suffix “cityadventcalendar” nor the top-level domain designation “.info” detracts from the overall impression given by the Disputed Domain Name.
Therefore, the Disputed Domain Name must be considered to be confusingly similar to the LEGO Trade Marks.
The Complainant submits that despite carrying out research, it has been unable to find any evidence that the Respondent carries out any activity affording it any rights or legitimate interests in the use of the LEGO Trade Marks. In addition, insofar as the Complainant is aware, the Respondent has not registered any trade marks or trade names encompassing the body of the Disputed Domain Name. Consequently, insofar as the Complainant is aware the Respondent may not claim any rights established by common usage of the term “lego”.
Furthermore, the Complainant asserts that it has not granted any licence or authorisation for the Respondent to use the LEGO Trade Marks, and that there has never been any commercial relationship whatsoever between the Respondent and the Complainant or the Complainant’s products. The Complainant further submits that pursuant to the ruling in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312, this is a factor to be taken into consideration in the context of deciding whether a legitimate interest exists.
The Complainant submits that, due to the fame of the LEGO Trade Marks across the globe, it is highly unlikely that the Respondent was not aware of the Complainant’s brand and trade mark rights at the time of registration of the Disputed Domain Name. Therefore, the Respondent’s use of the LEGO Trade Marks in the Disputed Domain Name took place without any right or legitimate interest on the part of the Respondent.
The LEGO Trade Marks have a widespread reputation and enjoys significant awareness throughout the world, in relation to the toys and children’s products they denote. It is highly likely that this fact, as well as the desire to capitalize on the reputation of the LEGO Trade Marks, encouraged the Respondent to register the Disputed Domain Name.
As mentioned above, the Complainant attempted in the first instance to resolve the matter at hand amicably, by sending a cease and desist letter; however, this course of action failed, as the Respondent did not respond in any way to the Complainant’s attempts to initiate contact. This strongly suggests that the Respondent did not register the Disputed Domain Name in good faith, but rather in bad faith, with the aim of using this domain name for commercial gain by creating a likelihood of confusion with the Complainant’s LEGO Trade Marks so as to attract additional Internet users and thereby also additional income.
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that the registrar Webagentur.at Internet Services GmbH d/b/a domainname.at has confirmed that the language of the registration agreement used for the Disputed Domain Name is English (and German). The Complaint here is submitted in English. Therefore, the Panel finds that the Complaint was submitted in the proper language.
In order for the Complainant’s claim to succeed, in accordance with paragraph 4(a) of the Policy, the Panel must be satisfied that:
(1) The Disputed Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The Respondents have not filed a Response. This does not mean that a decision should automatically be granted in favour of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. However, under paragraph 14(a) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the Respondents’ failure to file a Response.
The Panel finds that the Complainant has rights in the LEGO Trade Marks, which have been acquired through registration and longstanding use in numerous jurisdictions worldwide. The Panel also finds that the Complainant’s LEGO Trade Marks are famous or well-known trade marks in the (children’s) toys industry, in over 130 countries across the globe.
The Disputed Domain Name contains the dominant and distinctive part of the LEGO Trade Marks, the word “lego”, in its entirety. The consistent position of UDRP panels has been that domain names are confusingly similar or identical to trade marks where “the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In addition, it has been previously held (for example, Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848 and General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087), that an entity using another’s trade mark cannot avoid confusion by adding descriptive or non-distinctive matter to this trade mark. In addition, it is an established principle that the use of a generic term in a domain name has little impact upon any determination in respect of use of a registered trade mark in this domain name (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253), and that use of such a generic term does not rule out the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
In light of the above, the Panel considers that the addition of the suffix “cityadventcalendar” to the word “lego” in the body of the Disputed Domain Name does not serve to distinguish the Disputed Domain Name from the LEGO Trade Marks. Therefore, there is a high risk of confusion between this domain name and the mark in which the Complainant has rights.
The Panel therefore finds that there is a significant risk of confusion between the Disputed Domain Name and the LEGO Trade Marks. Therefore, the Panel considers that the requirements set out in paragraph 4(a) of the Policy have been fulfilled in respect of the Complaint.
Pursuant to the materials submitted by the Complainant, the Panel finds that the Respondent is neither a licensee of the Complainant, nor has it been authorised to use the LEGO Trade Marks in any manner. Furthermore, the Panel finds that the Respondent has no legitimate interest in the Disputed Domain Name as there is no evidence to suggest that the Respondent is known under the name Lego or that the Disputed Domain Name is used in connection with a bone fide offering of goods or services.
In addition, the Complainant submits that at the time of the Complaint, the Respondent was using the Disputed Domain Name in order to generate traffic and income through sponsored links. The Complainant further asserts that the Respondent was therefore not making legitimate noncommercial or fair use of the Disputed Domain Name, without the intention of tarnishing or taking advantage of the reputation of the LEGO Trade Marks and brand. In spite of having been provided with the opportunity to do so, the Respondent has not provided any indication of any such use to which it may intend to put the Disputed Domain Name.
The Panel is therefore satisfied that the Complainant has showed prima facie that the Respondent is not using the Disputed Domain Name as a result of either a right or legitimate interest. Therefore, the burden of rebuttal is transferred to the Respondent (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
As the Respondent has not in any way responded to the Complaint, providing any contention that the Respondent has any rights or legitimate interests, the Panel accepts that the Claimant has proved to a sufficient degree that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
In order to meet the requirements set out in paragraph 4(a)(iii) of the Policy, it is not sufficient alone to prove that the Disputed Domain Name has been registered in bad faith. It is also necessary to prove that it has been used in bad faith.
In light of the fame and reputation of the LEGO brand and LEGO Trade Marks, it is reasonable to assume that the Respondent was aware that use of the word “lego” in the Disputed Domain Name would infringe the rights of the Complainant in these marks. The Respondent has not asserted that it was not aware of this, despite having had the opportunity to do so.
The Respondent has used the Disputed Domain Name intentionally to attempt to divert Internet users to the website accessible via the Disputed Domain Name, by creating a likelihood of confusion with the LEGO Trade Marks, the LEGO brand and/or products as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. As a result, and in the general context of paragraph 4(b)(iv) of the Policy, the Panel considers that registration and use of the Disputed Domain Name has taken place in bad faith (as per the ruling in AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
As a result, the Panel concludes that the Disputed Domain Name has been registered and used in bad faith. Therefore, the Panel considers that the Complainant’s submissions have met the condition set out in paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legocityadventcalendar.info> be transferred to the Complainant.
Dated: September 27, 2010
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